[ author: Jordan Zolliecoffer]

The United States Supreme Court granted certiorari to review the Second Circuit’s inconsistent application of the fair use doctrine when it comes to copyrighted art. The case at issue assesses whether the infamous “Prince Series,” a collection of silkscreen prints by Andy Warhol, are fair use of photographs by Lynn Goldsmith under the transformative use doctrine.

Recap

To recap, Lynn Goldsmith is a professional celebrity photographer, specializing in portrait and concert photography for rock-and-roll musicians. While on an assignment for Newsweek magazine in 1981, Goldsmith took a series of portrait photographs of the late pop-star Prince, including the photograph at the heart of this litigation. Goldsmith went on to license the photo for an artist reference in Vanity Fair magazine. The license permitted Vanity Fair to publish an illustration based on Goldsmith’s photograph in their upcoming Fall issue. Vanity Fair, in turn, commissioned Andy Warhol to create an image of Prince for its upcoming issue.

Andy Warhol was an artist recognized for his significant contributions to contemporary art, particularly his silkscreen portraits of celebrities. After completing the Vanity Fair commission, Warhol created 15 additional works based on Goldsmith’s photograph now referred to as the “Prince Series.” In 2017, The Andy Warhol Foundation sued Goldsmith for a declaratory judgment that the “Prince Series” did not infringe on Goldsmith’s copyright. (See Pay or Play’s earlier reporting of the copyright controversy here).

The District Court Decision

On July 1, 2019, the District Court of the Southern District of New York decided Warhol’s use of the photograph did not infringe upon Goldsmith’s copyright. The Foundation made a pertinent argument for non-infringement: application of the fair use doctrine. Fair use is an affirmative defense in copyright law. A court determines if the use of an original work, in this case Goldsmith’s photograph, is a fair use by analyzing (1) the character and purpose of the use, (2) the nature of the original work, (3) the amount taken from the original work, and (4) the market effect on the original work. The District Court agreed with The Foundation’s defense, particularly focusing on first factor of the fair use analysis. The court concluded that the “Prince Series” was “transformative,” meaning the Warhol pieces added “something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569 (1994). While Goldsmith’s photograph portrays the legend as uncomfortable and a vulnerable human being, reasoned the District Court, Warhol’s screen print series portrays Prince as an “iconic, larger-than-life figure.”

The District Court’s decision relied chiefly on the Court of Appeals of the Second Circuit’s holding in Cariou v. Prince, 714 F.3d 694 (2d Cir. 2013). Cariou is described as a “high-water mark” case for the Second Circuit’s recognition of transformative works. The decision is consistent with the Supreme Court’s holding in Campbell, where transformativeness is achieved when the new work “adds something new” and presents “images with a fundamentally different aesthetic” than the original photograph. On Lynn Goldsmith’s appeal, however, the Court of Appeals of the Second Circuit flipped the District Court’s decision on its head.

The Court of Appeals Decision

On March 26, 2021, the Court of Appeals ruled that the “Prince Series” is not fair use, on the grounds that the Warhol pieces are not “transformative.” The Court of Appeals rejected the District Court’s conclusion that a secondary work is fair use if the work has a different “purpose or character” than the original and offers a new expression, employed through new aesthetics communicating a different meaning, divergent from the original. The Court of Appeals held that a work cannot serve a “transformative purpose and character” for fair use purposes without “something more.” If an artist simply imposes their artistic style onto an original work, i.e., changes the aesthetic to communicate a different meaning, this alteration alone cannot be considered transformative. The court concluded the Warhol prints “are much closer to presenting the same work in a different form, that form being a high-contrast screenprint, than they are to being works that make a transformative use of the original.”

The Cariou decision explicitly affirms that a secondary work “adding something new,” like an artistic style, alone is transformative. However, the current Warhol decision opposes this set precedent without expressly overruling it. The discrepancy in fair use outcomes not only diametrically oppose each other, but also creates a dangerous intra-circuit spilt in the Second Circuit.

The Supreme Court Takes Up the Royal Battle Over Fair Use

The United States Supreme Court granted certiorari to review the Second Circuit’s inconsistent decisions regarding fair use. The issue before the court is whether a work of art is “transformative” when it conveys a different meaning or message from its source material, or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material?

Shortly after the Warhol decision, the Supreme Court issued its decision in Google LLC v. Oracle Am., Inc. The court ruled that Google’s copying of parts of Oracle’s software constituted fair use on the grounds of transformativeness. The court focused on the first factor, ruling that Google’s copying had a transformative purpose in that Google’s use had a completely separate purpose than Oracle: to create an entirely new programming platform for Androids. Google LLC v. Oracle essentially reaffirms the Campbell precedent, posing an extreme problem for the Second Circuit’s Warhol decision. It is likely that the Supreme Court will not affirm the Second Circuit’s re-evaluation of transformativeness, given the direct opposition to set precedents in Campbell and now Google.

However, there is a concern that the fair use doctrine, as we currently understand it, will change. The Supreme Court must reckon with far-reaching boundaries of Campbell regarding the transformative test. They must decide whether bright-line rules are necessary or continue developing the transformative test through case law. Right now, the main priority of the Supreme Court is preventing other circuits from falling down the rabbit hole of broadening the scope of transformativeness beyond the intentions set forth in Campbell.

Warhol is expected to have lawyers, especially intellectual property specialists, at the edge of their seats. Stay tuned as Pay or Play reports updates from the Supreme Court decision.

Jordan Zolliecoffer is a summer associate at Fox Rothschild LLP, based in the firm’s Los Angeles office

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